Delta Sigma Theta Sorority, Inc. v. Bivins
20 F. Supp. 3d 207
D.D.C.2014Background
- Delta Sigma Theta sued Bivins, Goins, and FratHouse for alleged trademark infringement based on merchandise sold via the defendants’ Naples, Florida clothing business and website.
- Plaintiff served cease-and-desist letters; plaintiff then filed suit in D.C. (Feb. 26, 2013) and sought a TRO.
- Defendants (Bivins and Goins) moved to dismiss for lack of personal jurisdiction, improper venue, and (as to Bivins) failure to state a claim; FratHouse did not appear through counsel.
- Court allowed limited jurisdictional discovery and entered a TRO during discovery. Discovery showed 733 total transactions by defendants, with only ten shipped/billed to D.C., and at most two involving allegedly infringing items (one canceled/refunded).
- Plaintiff conceded choosing D.C. for convenience of its counsel/party. Defendants live and operate in the Middle District of Florida.
- Court found venue improper in D.C. and, in the interest of justice, transferred the case to the Middle District of Florida; other dismissal arguments were denied without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether venue is proper in D.C. under 28 U.S.C. § 1391(b) | Venue proper because a "substantial part" of events giving rise to the claim occurred in D.C.; some sales (and potential confusion) reached D.C. consumers | Venue improper: all defendants reside and operate in Middle District of Florida; virtually no infringing sales shipped to D.C. | Venue is improper in D.C.; plaintiff failed to show a substantial part of events occurred in D.C. |
| Whether § 1391(b)(2) is satisfied (substantial events in forum) | Plaintiff: a cause of action may arise in multiple districts; website sales and alleged confusion can support venue | Defendants: only ~1.3% of sales to D.C., at most two infringing items (.2%); no targeted advertising to D.C.; defendants’ witnesses/records in Florida | §1391(b)(2) not satisfied: two sales (one canceled) are insufficient to constitute a "substantial part." |
| Whether situs of defendants’ residence or other §1391 prongs support venue | Plaintiff emphasized alleged transactions into D.C. | Defendants noted residence in Middle District of Florida makes D.C. venue unavailable under §1391(b)(1) and (b)(3) | Venue unavailable under (b)(1) and (b)(3); plaintiff must rely on (b)(2) and failed to do so |
| Whether dismissal or transfer is appropriate under 28 U.S.C. § 1406(a) | Plaintiff opposed transfer, preferring D.C. forum | Defendants requested dismissal or transfer to Middle District of Florida where venue and witnesses are located | Court exercised discretion to transfer to the Middle District of Florida in the interest of justice rather than dismissing. |
Key Cases Cited
- Atlantic Marine Construction Co. v. U.S. Dist. Court, 134 S. Ct. 568 (U.S. 2013) (venue propriety depends on whether federal venue statutes are satisfied)
- Leroy v. Great Western United Corp., 443 U.S. 173 (U.S. 1979) (a claim may arise in more than one district)
- Noxell Corp. v. Firehouse No. 1 Bar-B-Que Restaurant, 760 F.2d 312 (D.C. Cir. 1985) (small fraction of sales into forum insufficient to support venue in D.C.)
- Sinochem Int’l Co. v. Malay. Int’l Shipping Corp., 549 U.S. 422 (U.S. 2007) (district courts may choose among threshold grounds to deny audience to a case)